DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-21 are currently pending and are being hereby examined herein. Claims 1 and 11 are amended. Claim 21 is new.
Joint Inventors
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Response to Amendment / Remarks
Any reference to the prior office action refers to the Non-Final Rejection dated 23 April 2026.
Applicant's arguments, filed 21 July 2026, with respect to the rejections under 35 U.S.C. 103 from the prior office action, have been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (the Examiner has modified the combination to include a newly-cited reference with a joint including both a motor and brake, necessitated by Applicant’s amendment, see below)
Information Disclosure Statement
The Applicant has submitted two information disclosure statements (IDSs) with a very large number of references listed on each of them, likely totaling thousands upon thousands of pages to potentially review. In accord with dicta from Molins PLC v. Textron, Inc., 48 F.3d 1172 (Fed. Cir. 1995), stating that forcing the Examiner to find "a needle in a haystack" is "probative of bad faith." Id. [The Molins] case presented a situation where the disclosure was in excess of 700 pages and contained more than fifty references. Likewise, the instant application’s IDSs include way more than even what was found to be excessive in the Molins case, and these IDSs do not include any concise explanation of the relevance of any of the listed references nor cite any pages, columns, and lines (or paragraph numbers) where relevant passages or relevant figures appear. According to MPEP Section 2004 “Aids to Compliance With Duty of Disclosure [R-08.2012]”, “It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to Applicant’s attention and/or are known to be of most significance.” Additionally, per MPEP Section 609.04(a)(III): “applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.” See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
As such, even though these IDSs have been placed in the application file with the list of references marked as considered, and the compilation of those listed US Patents and Pre-Grant Publications have at least been key-word searched and/or classification searched for relevant prior art, the information referred to therein for each individual reference has admittedly been considered only within the reasonable time period allocated by the Examiner out of the total normal examination time given for any given application with a similar classification picture. If Applicant wishes to have one or more references considered more in depth, the Examiner requests resubmitting the IDSs with a reasonable number of references that are known to be pertinent for the determination of patentability as defined by 37 C.F.R. § 1.56, along with the concise explanations as to relevance and citations explaining the locations of relevant passages or figures, as per 37 CFR 1.98(a)(3) and 37 CFR § 1.105.
The information disclosure statements submitted on 21 July 2026 were thus “considered”.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 2017/0128136 (hereinafter, Post) in view of U.S. Patent No. 6,451,027 (Cooper et al., hereinafter, Cooper) in further view of U.S. Pub. No. 2019/0053862 (Ecke et al., hereinafter, Ecke).
Regarding Claim 1, Post discloses A surgical robotic system (see at least [0029] and FIG. 3: system 10) comprising:
a robotic arm including a plurality of robotic arm joints (see at least [0029]-[0030] and FIG. 3: manipulator 14 and joints 22); and
a controller (see at least FIG. 3: controller 40) configured to:
receive an alignment for the robotic arm including an aligned position for each robotic arm joint of the plurality of robotic arm joints (see at least [0050]-[0053]: “the controller 40 is configured to determine the appropriate joint angles to command for the joints 22 based on the output of the virtual simulation 42. That is, the controller 40 computes the commanded joint angle for each of the joints 22 in response to the input force”);
switch each robotic arm joint of the plurality of robotic arm joints into a passive mode for aligning each robotic arm joint of the plurality of robotic arm joints to the respective aligned position (see at least [0084]: “In another application, the manipulator 14 directs autonomous movement of the tool 30 in an autonomous mode of operation. Here, the manipulator 14 is capable of moving the tool 30 free of operator assistance. Free of operator assistance may mean that an operator does not physically contact the tool 30 to apply force to move the tool 30. Instead, the operator may use some form of control to remotely manage starting and stopping of movement. For example, the operator may hold down a button of a remote control to start movement of the tool 30 and release the button to stop movement of the tool 30”; the joints are switched between the autonomous mode and the mode where the operator does contact the tool);
track a position of each robotic arm joint of the plurality of robotic arm joints while each robotic arm joint is manually moved into its aligned position (see at least [0033] and [0042]: “Each joint motor 24 may be equipped with a position sensor 26”; “One example of the position sensor 26 is an encoder that measures the joint angle of the respective joint 22”, “The controller 40 is further connected to the position sensors (e.g., encoders) 26 and is configured to measure an actual joint angle of each respective joint 22 using signals received from the position sensors 26”);
wherein the passive mode comprises permitting manual movement of each robotic arm joint of the plurality of robotic arm joints while an actuator associated with each robotic arm joint is controlled to simulate passive behavior (see at least [0032] and [0081]: “Each joint 22 is actively driven by one of the joint motors 24. Utilization of the methods described herein may, at times, give the impression that some of the joints 22 are passive, meaning that the joint 22 is moved directly by the force exerted by the user (similar to a door joint). However, the joints 22 in the embodiments described herein are not passive. The system 10 and method mimic passive behavior by actively driving the joints 22 and thereby commanding control of the manipulator 14 in response to determined forces applied to the manipulator 14.”, “The system 10 and method may utilize the backdriving technique described herein for several different applications or situations. In one example, the user of the robotic system 10 can control the manipulator 14 by applying force to the surgical tool 30 and by backdriving the manipulator 14 by applying the external force to any given joint(s) 22 or link(s) 22. This may allow the user to grossly position the manipulator 14 with ease. Such application may be particularly useful when setting up the manipulator 14 at the work site.”).
Post does not explicitly disclose lock in a predetermined sequence each robotic arm joint of the plurality of robotic arm joints, by engaging a brake associated with the robotic arm joint, once the aligned position for each robotic arm joint is achieved.
Motor-powered joints having brakes was well-known to one of ordinary skill in the art before the effective filing date of the invention. Cooper, in the same field of surgical robots, and therefore analogous art, teaches engaging a brake associated with the robotic arm joint (see at least column 8: “A handle 48 is provided to enable the articulated arm 14 to be brought into a general initial position when the endoscope is inserted through the port so as to align the remote center 44 with the port of entry, or incision, in the patient body. The endoscope can then be brought to a desired location by manipulation of the master controls, or by pushing clutch buttons 25 to release brakes to enable the floating of the arm and backdriveability of the arm”; “Advantageously, the arm 14 is provided with brakes arranged automatically to brake the arm in its position and orientation in the event of a loss of power to the arm 14, for example”; “The brakes typically cooperate with pivots at 32 and 46 to brake the arm. The brakes function as auto locks in the event of a loss of power, or the like. The clutch button 25 is arranged to release these brakes to permit floating of the arm when desired, for example, when coupling the arm to the endoscope as described above”).
Combining the disclosure of Post with the joint brakes on motor joints of Cooper, would have been obvious, before the effective filing date of the invention, with a reasonable expectation of success, to one having ordinary skill in the art, so that the robot does not shift in the case of a power outage (see at least Cooper column 8).
Ecke, in the same field of surgical robots, and therefore analogous art, teaches receive an alignment for the robotic arm including an aligned position for each robotic arm joint of the plurality of robotic arm joints (see at least [0066] and Fig. 2: “If all joints are determined to have been adjusted to their target position, the method end in step S2.8 because the alignment of the mechatronic articulable arm has been completed”) and lock in a predetermined sequence each robotic arm joint of the plurality of robotic arm joints, by engaging a locking mechanism associated with the robotic arm joint, once the aligned position for each robotic arm joint is achieved (see at least [0025]-[0032] and [0078]-[0088]: “The instructions provided may be joint by joint (e.g. also only unlocking one joint at a time) or comprise multiple joints at a time”; “The joints can be locked automatically if the target encoder position is reached within a certain threshold”; “the instruction data is determined by determining an order in which the at least two spatial relationships between the connected elements shall be adjusted”; “for example by activating a locking mechanism configured to lock a joint connecting the connected elements”).
Combining the known technique of Ecke with the Post and Cooper combination (i.e., locking the joints of Post with the brakes of Cooper according to the known technique of Ecke) would have been obvious, before the effective filing date of the invention, with a reasonable expectation of success, to one having ordinary skill in the art, to combine the determination of an aligned position relative to a body part, displaying how to reach said aligned position, and locking of joints on the way to aligned position of Ecke with the Post and Cooper combination with the motivation of having an efficient method for an operator to align an arm towards a target position (see at least Ecke [0006]) and ensuring that the position is maintained even if there is a power outage / power is disconnected (see at least Cooper column 8).
Regarding Claim 2, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 1. Furthermore, Ecke further teaches (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) further comprising: a display configured to output an indication that each robotic arm joint of the plurality of robotic arm joints is moved into its aligned position (see at least [0066] and Fig. 2: “the instruction is output to a user for example on a display device such as a monitor 11”; an indication that a robotic arm joint is moved into its aligned position includes changing to the next instruction as shown on the flowchart for Fig. 2).
Regarding Claim 3, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 2. Furthermore, Ecke further teaches (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) wherein the display is further configured to output a second indication that the robotic arm is in an aligned configuration (see at least [0066] and Fig. 2: one of ordinary skill in the art would determine no instruction is displayed, therefore, the robotic arm is an aligned configuration).
Regarding Claim 4, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 2. Furthermore, Ecke further teaches (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) wherein the display is configured to output instructions for aligning the robotic arm (see at least [0020], [0066], [0072], Fig. 2, and Fig. 5: “the instruction is output to a user for example on a display device such as a monitor 11”).
Regarding Claim 5, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 4. Furthermore, Ecke further teaches (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) wherein the instructions include aligning the plurality of robotic arm joints in the predetermined sequence (see at least [0066], [0088], and Fig. 2: “joint between two connected elements of the mechatronic articulable arm is selected for alignment (i.e. adjustment) in step S2.4. The instruction data is determined in step S2.5 and the instruction is output to a user for example on a display device such as a monitor 11”).
Regarding Claim 6, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 1. Furthermore, Ecke further teaches (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) wherein the alignment corresponds to a configuration of the robotic arm selected from the group consisting of a storage configuration, a transport configuration, and an operation configuration (see at least [0006[ and Fig. 5: “The disclosed method encompasses determining an instruction for adjusting the arm segments of a mechatronic articulable arm with optimum efficiency so that the distal end of the arm reaches a desired position relative to a target object such as an anatomical body part” (i.e., an operation configuration)).
Regarding Claim 7, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 1. Furthermore, Post further discloses further comprising: an instrument configured to mechanically engage the robotic arm (see at least [0035] and FIG. 3: energy applicator 32 / tool 30).
Regarding Claim 8, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 1. Furthermore, Post further discloses further comprising: a movable cart including a setup arm configured to engage the robotic arm, the setup arm including a plurality of setup arm joints (see at least FIG. 3 and [0036]: portable cart 19, joints J1 and J2 can be considered setup arm joints).
Regarding Claim 9, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 8. Furthermore, wherein the controller is further configured to: receive a second alignment for the setup arm including a second aligned position for each setup arm joint of the plurality of setup arm joints; switch each setup arm joint of the plurality of setup arm joints into the passive mode during which each setup arm joint is manually movable; track a second position of each setup arm joint of the plurality of setup arm joints while each setup arm joint is manually moved its second aligned position; and lock each setup arm joint of the plurality of setup arm joints once the second aligned position for each setup arm joint is achieved would have been obvious, before the effective filing date of the invention, with a reasonable expectation of success, to one having ordinary skill in the art, for the same reasons as Claim 1 as the “setup arm joints” are just the joints closest to the cart (joints J1 and J2 in Post) and one of ordinary skill would find it obvious for them to act in the same way as the other joints.
Regarding Claim 10, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 9. Furthermore, wherein the plurality of robotic arm joints and the plurality of setup arm joints are aligned together would have been obvious, before the effective filing date of the invention, with a reasonable expectation of success, to one having ordinary skill in the art, for the same reasons as Claim 1 as the “setup arm joints” are the joints closest to the cart (joints J1 and J2 in Post) and one of ordinary skill in the art would find it obvious for them to act in the same way as the other joints / be aligned together.
Regarding Claim 11, this claim is substantially similar to Claim 1, and is rejected for the same reasons as Claim 1.
Regarding Claim 12, this claim is substantially similar to Claim 2, and is rejected for the same reasons as Claim 2.
Regarding Claim 13, this claim is substantially similar to Claim 3, and is rejected for the same reasons as Claim 3.
Regarding Claim 14, this claim is substantially similar to Claim 4, and is rejected for the same reasons as Claim 4.
Regarding Claim 15, this claim is substantially similar to Claim 5, and is rejected for the same reasons as Claim 5.
Regarding Claim 16, this claim is substantially similar to Claim 6, and is rejected for the same reasons as Claim 6.
Regarding Claim 17, this claim is substantially similar to Claim 7, and is rejected for the same reasons as Claim 7.
Regarding Claim 18, this claim is substantially similar to Claim 8, and is rejected for the same reasons as Claim 8.
Regarding Claim 19, this claim is substantially similar to Claim 9, and is rejected for the same reasons as Claim 9.
Regarding Claim 20, this claim is substantially similar to Claim 10, and is rejected for the same reasons as Claim 10.
Regarding Claim 21, the Post, Cooper, and Ecke combination teaches all the limitations of Claim 1. Furthermore, (as part of the same combination as Claim 1 / with the same motivation to combine as Claim 1) one of ordinary skill in the art would consider the teachings of Ecke to at least suggest wherein the predetermined sequence locks a robotic arm joint closest to a base on the robotic arm first and thereafter proceeds to lock a next robotic arm joint in a serial chain of the plurality of robotic arm joints (see at least [0028], [0083], and Fig. 5: “the joints will be adjusted in dependence on their distance from a base part of the mechatronic articulable arm”; “The joints can be locked automatically if the target encoder position is reached within a certain threshold”; on monitor 11 in Fig. 5 the visual instructions 12 show the individual joint 3 closer to the base to the left of the individual joint 3 farther from the base, and one of ordinary skill in the art would interpret that to correspond to adjusting the closer to the base individual joint 3 first, which means locking it first as well); additionally and/or alternatively, wherein the predetermined sequence locks a robotic arm joint closest to a base on the robotic arm first and thereafter proceeds to lock a next robotic arm joint in a serial chain of the plurality of robotic arm joints would have been obvious to try, before the effective filing date of the invention, with a reasonable expectation of success, to one having ordinary skill in the art, as there are a finite number of options for the order of locking joints in a robot arm and one of ordinary skill in the art would try the finite number of options for joint locking order to meet the market demand of an efficient / easy-to-understand locking strategy since Ecke teaches that the order of joint placement may be completed in many different ways (see at least [0028]-[0032] and Table 2). Furthermore, Applicant has provided no unexpected result from locking according to that sequence and, in fact, discloses that any sequence could be possible and that the claimed sequence is merely one possible example of a sequence (see at least paragraph [0047] of the specification).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA ROBYN MORFORD whose telephone number is (571)272-6109. The examiner can normally be reached Monday - Friday 8:00 AM - 4:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Worden can be reached at (571) 272-4876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.R.M./Examiner, Art Unit 3658
/THOMAS E WORDEN/Supervisory Patent Examiner, Art Unit 3658
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